Wednesday, April 04, 2012

Advanced Fiber Technologies vs. J&L Fiber

The disposition by the CAFC:

Advanced Fiber Technologies (AFT) Trust (“AFT”, the plaintiff) appeals from the district court’s construction of certain claim terms and its grant of summary judgment of noninfringement and lack of willfulness in favor of J&L Fiber Services, Inc. (“J&L”). We affirm the grant of summary judgment on willfulness. Because the district court erred in its interpretation of a term in its claim construction, however, we reverse the grant of summary judgment of noninfringement and remand. We do not address AFT’s arguments concerning the district court’s denial of summary judgment with respect to invalidity, which is not properly before us.

On claim construction:

A court should also consult the patent’s prosecution history, which, like the specification, provides evidence of how the PTO and the inventor understood the claimed invention. Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc). In reviewing these sources, if the specifi- cation or prosecution history defines a claim term, that definition shall apply even if it differs from the term’s ordinary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002). Moreover, if a patentee makes a clear and unambiguous disavowal of claim scope during prosecution, that disclaimer informs the claim construction analysis by “narrow[ing] the ordi- nary meaning of the claim congruent with the scope of the surrender.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). Finally, courts may rely on dictionary definitions when construing claim terms, “so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.” Phillips, 415 F.3d at 1322–23 (internal quotation marks omitted).


The disputed term at issue, “perforated,” appears not in the claims but rather in the district court’s construction of a disputed claim term. We note, as an initial matter, that “we do not ordinarily construe words that are not in claims.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009); see also Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339 (1961) (“[T]he claims made in the patent are the sole measure of the grant.”). However, in those cases in which the correct construction of a claim term necessitates a derivative construction of a non-claim term, a court may perform the derivative construction in order to elucidate the claim’s meaning.
Our opinion in Edwards is illustrative. 582 F.3d 1322. In that case, we reviewed a district court’s claim construction in patents relating to intraluminal grafts.


After doing so, we conclude that the district court erroneously construed “perforated” using extrinsic evidence that contradicts the intrinsic evidence of record.


Rather, the district court’s error lies in its reliance on extrinsic evidence that contradicted the patent’s specification, including the claims and written description. See Phillips, 415 F.3d at 1319 (“[E]xtrinsic evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.”); see also OSRAM GmbH v. Int’l Trade Comm’n, 505 F.3d 1351, 1356 (Fed. Cir. 2007) (“The patent specification is the primary re- source for determining how an invention would be under- stood by persons experienced in the field.” (citing Phillips, 415 F.3d at 1312–13)). The claims themselves do not require the screening medium to be made by puncturing or piercing, they simply limit the screening medium to “having a plurality of openings therethrough,” ’940 patent claim 1, or “having a plurality of slots therethrough,” id. claim 10. Likewise, the written description provides no basis for the court’s “pierced or punctured” limitation. As noted above, the court began its analysis by construing “screening medium” (and its synonym, “screening plate”) as a “perforated barrier.” The court correctly recognized that the specification, in a “one-sentence mention,” disclosed one such perforated barrier that was made by assembling wires, not by puncturing or piercing. Ad- vanced Fiber, 751 F. Supp. 2d at 363. The court erred, however, by disregarding that embodiment.

An interesting observation on brevity:

Indeed, as a general matter, brevity in a patent disclosure should be applauded, not impugned. In re Gay, 309 F.2d 769, 733 (CCPA 1962) (“[S]pecifications have often been criticized as too cluttered with details to give an easy understanding of what the invention really is.”). A disclosed embodiment is a disclosed embodiment, no matter the volume of ink required to adequately describe it. See Falkner v. Inglis, 448 F.3d 1357, 1366–67 (Fed. Cir. 2006) (“No length requirement exists for a disclosure to adequately describe an invention.”).


As “perforated” was not defined during prosecution, this construction is also consistent with the file history of the ’940 patent. Finally, we note this interpretation also accords with the ordinary defini- tion of “perforated” as illustrated by extrinsic evidence of record—“having a hole or series of holes.” J.A. 2380.

Because the district court granted summary judgment of noninfringement based on an incorrect construction of the asserted claims, we reverse that judgment.

**On denial of summary judgment:

We turn next to AFT’s assertion that the district court erred by denying summary judgment that certain claims of the ’940 patent are not invalid for obviousness over the PIMA reference. A district court’s denial of summary judgment is ordinarily not appealable. M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., 439 F.3d 1335, 1344 (Fed. Cir. 2006). Although it may be proper under the doctrine of pendent appellate jurisdiction for us to review rulings that are not themselves independently appealable in conjunction with a ruling over which we do have jurisdiction, we need not do so here. See Swint v. Chambers Cnty. Comm’n, 514 U.S. 35, 50–51 (1995); Entegris, Inc. v. Pall Corp., 490 F.3d 1340, 1348 (Fed. Cir. 2007).

**As to willful infringement

Lastly, we consider AFT’s assertion that the court erred by granting summary judgment dismissing AFT’s claim for willful infringement. Proof of willful infringe- ment requires at least a showing of objective recklessness. To establish willful infringement, “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc). This objective prong “tends not to be met where an accused infringer relies on a reasonable defense to a charge of infringement.” Spine Solutions, Inc. v. Med- tronic Samofor Danek USA, Inc., 620 F.3d 1305, 1319 (Fed. Cir. 2010). If the evidence satisfies the objective standard, “the patentee must also demonstrate that this objectively-defined risk . . . was either known or so obvi- ous that it should have been known to the accused in- fringer.” Seagate, 497 F.3d at 1371.

The dissent noted:

As the majority points out, the specification briefly mentions wedgewire as an embodiment of the invention.5 Not every embodiment disclosed in the specification necessarily falls within the scope of the claims. AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1248 (Fed. Cir. 2007) (“[E]very claim need not contain every feature taught in the specification.”); Nazomi Commc’ns, Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005) (holding that a claim may “em- brac[e] different subject matter than is illustrated in the specific embodiments in the specification”); Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to include within each of their claims all of [the] advantages or features described as significant or important in the written de- scription.”). As discussed above, to the extent this em-bodiment was within the claims, AFT specifically defined the term “screening medium” during prosecution to ex- clude this embodiment.
Other prior art references also make the same distinc- tion between perforated screens and wedgewire screens. See, e.g., J.A. 935 (differentiating a vee-wire (or wedge- wire) screen from a perforated plate); J.A. 1373-74 (de- scribing various methods of manufacturing a “screen plate,” each of which begins with a solid plate); J.A. 1390- 92 (describing “screen plates” as being punched, drilled, or slotted by milling). These references can help to demon- strate how a disputed term was used by those of skill in the art at the time of the invention. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).


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